HARVARD UNIVERSITY Office of Technology Development Responsible Conduct of Research Harvard School of Public Health Intellectual Property February 7 th,

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Presentation on theme: "HARVARD UNIVERSITY Office of Technology Development Responsible Conduct of Research Harvard School of Public Health Intellectual Property February 7 th,"— Presentation transcript:

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HARVARD UNIVERSITY Office of Technology Development Responsible Conduct of Research Harvard School of Public Health Intellectual Property February 7 th, 2014

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HARVARD UNIVERSITY Office of Technology Development Concept of Intellectual Property (IP) Harvard’s IP Policy Patents and patent applications IP in academic setting Harvard’s Office of Technology Development –What is it? –How do you find us? –When do you contact us? 2

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HARVARD UNIVERSITY Office of Technology Development Creations of the mind subject to legal protection Patents, copyrights, trademarks & trade secrets - Patents confer right to exclude others from making, using, selling or importing the invention - Copyrights protect expression or presentation of ideas but not the ideas themselves - Trademarks identify and distinguish goods/services of one commercial provider from those of others; e.g. logo, brand name, tagline - Trade secrets are any valuable commercial information that is not made public & that can be used for competitive advantage; no formal registration process Also: unpublished data & results, materials, protocols 3

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HARVARD UNIVERSITY Office of Technology Development A form of monopoly granted by the federal government. Means for converting intangible assets (e.g., research results) into a property right. Property rights which may be assigned, licensed, and given as security. Patentees have the exclusive right to prevent others from practicing the patented invention and/or to obtain damages from infringers.

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HARVARD UNIVERSITY Office of Technology Development Federal agency that funded research had principal authority over patenting decision No unified federal patent policy across agencies Patchwork of waivers and agreements between some universities and government agencies Federal government owned rights to thousands of patents but would not grant exclusive licenses Lack of clear ownership & rights to commercialize was disincentive for technology development 5

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HARVARD UNIVERSITY Office of Technology Development Patent & Trademark Law Amendments Act (1980) Co-sponsored by Senators Birch Bayh & Robert Dole Congress’s objectives: –promote dissemination and commercial development of inventions arising from government-funded research –foster collaboration between universities and industry Major provisions: ­Universities can own inventions resulting from federally-funded research ­Universities encouraged to partner with industry ­Universities expected to file patent applications and license them to companies ­Royalties to be shared with inventors and to be used to fund research/education 6

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HARVARD UNIVERSITY Office of Technology Development Why give monopolies which can potentially be used to keep the general public from using useful technologies? –Reward inventors and encourage innovation. –Encourage investments in research and development. –Establish a body of technical literature.

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HARVARD UNIVERSITY Office of Technology Development A method for reducing hematologic toxicity in a cancer patient undergoing taxol treatment comprising parenterally administering to said patient an antineoplastically effective amount of about mg/m 2 taxol over a period of about three hours. Taxol annual sales for BMS peaked in 2000 at $1.6B

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HARVARD UNIVERSITY Office of Technology Development

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HARVARD UNIVERSITY Office of Technology Development Utility—An invention must be useful. Novelty—An invention must be new. Non-obvious—An invention cannot be suggested by the “prior art.” Enablement—An invention must be fully disclosed in the patent application (“how to make” and “how to use”). Written description—the specification must describe invention in a manner demonstrating “possession” of the invention.

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HARVARD UNIVERSITY Office of Technology Development 1. An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and (b) at least one protrusion attached at one end thereof said main section and extending a predetermined distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section; and wherein said animal toy is adapted to float on the water.

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HARVARD UNIVERSITY Office of Technology Development

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HARVARD UNIVERSITY Office of Technology Development Does not grant an affirmative right to do anything ­ Dominating patent owned by another party? Right to exclude others from making, using, selling, offering for sale, or importing the patented invention for the term of the patent (now 20 years from the application filing date) OTD mostly concerned with “Utility” patent applications Patentable subject matter - Compositions of matter, manufacturing processes, chemical synthesis routes, methods of treating, devices, algorithms March , US changed from “first to invent” system to a “first inventor to file” system 1-year US grace period concept weakened Want to file early and BEFORE public disclosure 13

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HARVARD UNIVERSITY Office of Technology Development Covers ownership of patents, copyrights, software, and unpatented materials In general, Harvard has ownership of patentable inventions, software, and unpatented tangible materials made with funds provided by or administered by Harvard, or made with non-incidental use of Harvard’s resources In most cases, authors have ownership of copyrights in books, films, works of art, musical works, etc. ­ Copyright in software handled more like patentable inventions Obligation to report inventions to OTD Must sign Participation Agreement: 14

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HARVARD UNIVERSITY Office of Technology Development Sharing of net royalties on inventions reported after 10/04/2011 Administrative fee – 15% Of the remainder: Creator personal share – 35% Creator research share – 15% Creator Department/Center share – 15% * Creator School share – 20% President’s share – 15% * If within FAS, or if no Department or Center, to be allocated by Dean of the Creator's School for research purposes 15

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HARVARD UNIVERSITY Office of Technology Development Click on “Report of Invention Form” Information on Contributors Funding sources 3 rd party materials or code Public disclosures (posters, presentations, publications) Upload detailed description or draft manuscript Once submitted, you will receive a ed confirmation, it will be assigned a case number at OTD, and someone from OTD will follow up with you 16

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HARVARD UNIVERSITY Office of Technology Development Material Transfer Agreements (MTAs) ( 1,873 in FY13) Ownership of IP resulting from use of material Provider’s rights to review manuscript before publication Ownership of derivatives and modifications of material Submit MTAs to OTD for processing online: click “incoming” or “outgoing” Confidential Disclosure Agreements (CDAs) - Common when exchanging confidential information with a company unpublished data, results, methods, inventions Contact OTD whenever a CDA might be required or has been sent to you 18

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HARVARD UNIVERSITY Office of Technology Development 22 Expose industry and investors to Harvard research and PIs Market and commercialize specific technologies Attract industry to collaborate and fund research Expose faculty to industry and investor interests/practices Industry Outreach

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HARVARD UNIVERSITY Office of Technology Development You feel you have a new invention –Assays, methods, instruments –Compositions of matter –Algorithms, software, databases –New and useful improvements of the above Please report potential inventions to OTD, and certainly before: –Submitting an abstract –Presenting a poster –Giving a talk –Publishing a paper –Sharing information about the work with a third party on a non-confidential basis 28

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HARVARD UNIVERSITY Office of Technology Development Company wants to speak with you Company requests confidentiality agreement Institution/Company requests transferable material You want material from Institution/Company You seek non-federal funds You are unsure about need to contact OTD 29

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HARVARD UNIVERSITY Office of Technology Development Harvard University Office of Technology Development Grant Zimmermann, PhD Director of Business Development Office of Technology Development Gordon Hall, Suite 414 Tel: otd.harvard.edu

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HARVARD UNIVERSITY Office of Technology Development 31

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HARVARD UNIVERSITY Office of Technology Development In 1980 –Government held title to 28,000 patents –Fewer than 5% licensed for commercialization –Universities held ~500 patents By 2005 –US university tech transfer programs increased 8X –Over 8,000 patent filings –Universities held ~3,300 patents –Thousands of university-licensed products & new US companies from federally funded research 32 Nature Methods (2011) 8(10):1728